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I've been working on and off on patents for about twenty years, though I am neither an attorney nor a patent agent. When I make one of my colleagues review a patent (which is for most of them the only time they read patents), a very common reaction is "How the heck did they get that?" OK, the word used is often more profane than ‘heck' - but the sentiment is the same: "Everyone who works in the field knows ‘x'; why was a patent granted on it?"

This anecdotal evidence is supported by recent more-thorough examinations, some described by Matt Levy of Patent Progress. Michael Risch of Villanova recently published a study showing that of 105 patents whose validity was examined in litigation, 44 were completely invalidated, and only 32 were found to have all valid claims (A Generation of Patent Litigation..", page 38) . Dennis Crouch of the University of Missouri has estimated the allowance rate for applications (when "Requests for Continuing Examination" are included) as about 70% (USPTO Breaks New Ground...) - that is, pretty much everybody who applies gets a patent, though sometimes it takes a while.

Are we to conclude, as Mr. Aharonian of the Internet Patent News email service often seems to advocate, that patent examiners are idiots and the USPTO is run by slimeballs? While the unfortunate limitations of human nature may play a role in the failings of the patent system, in this post we will suggest that the nature of patent prosecution inevitably leads to the often-silly and sometimes harmful results we observe. This brief discussion will then serve as motivation for the changes in the system we will examine in subsequent missives.

A patent consists of an abstract, a specification, drawings, and claims. But when a patent is examined, it is often the case that only the claims play a significant role. (An attorney colleague of mine believes that most examiners don't read anything but the claims, and the specification might as well be skipped.) This is curious, because, as noted by Professor Feldman of UC Berkeley in Rethinking Patent Law*, no one knows what the claims of a patent actually mean until it is litigated.

The claims are supposed to clearly describe what the applicant "claims" to have invented and therefore owns. Claims are usually fairly brief - a quarter of a page or less, often much less - and have a few "elements" which are supposed to describe an invention. An examiner responds to an application by citing one or more pieces of "prior art" (stuff that was published before the application was filed) that he or she alleges contain the purported inventive elements. It is often the case that only one bit of prior art is used; it is rare for more than four or five references to be cited. The applicant then argues that the prior art is not, in fact, relevant, and may also amend the language used in the claims to narrow their scope - although, as noted above, it's never clear what the practical effect is until you're in court.

The cited prior art essentially consists only of patents and patent applications, unless the applicant has provided publications from other sources. Sometimes the cited prior art just flat out has what the applicant thought of. One would think this should result in immediate abandonment of the application - but in fact, many applicants simply find a way to narrow the claims until something gets granted. Sometimes the cited prior art is so bizarrely irrelevant (at least to a person knowledgeable in the field) that one can only assume it is the product of a keyword search with no intelligence applied. But in general we can treat the cited prior art as roughly being taken at random from generally related earlier patents, in the sense that most topics have hundreds or thousands of applications and granted patents, and no one would have the ability or time to read and absorb a substantial fraction of them. And that leaves out all the technical literature and commercial product information that ought to be included but just isn't.

We can thus consider what happens if you randomly sample a complex object. If you actually design something, your code, or chip, or medical device, is unique. It always has a slightly different set of tradeoffs, guesses, wants, and compromises from other examples of similar stuff. So in the sense of not being identical to any single publication or object, every application is inventive, and that's what we see: most applications become granted patents. The applicant can always find a way to claim their stuff that's not quite the same as whatever art was cited against them. This might be ok if the system we used was primarily oriented to preventing exact copies of the patented object, but that's not how our existing system works. (In a future post we will examine some thoughts on how to usefully move towards such an approach to defining what is excluded by a patent right.)

What does not happen is what a practitioner in the field does with a technical publication: read the specification to figure out what the application thinks it has that is new, and then reflect upon the art to figure out if it is, independently of what the applicant thinks they'd like to own. The way the world should be is: If there is no invention in the specification, there can't be an invention in the claims. But that's not how the world actually works.

In summary, patent examination is mainly an exercise in the wordsmithing of claims, not a reflection on the novelty, clarity, and utility (or lack thereof) of a purported invention. It is this fact that explains why the results are often silly and sometimes absurd.

People are people and don't readily modify their behavior, at least once they get old enough to hold a job. What can we do to modify the system to make it work better with the people we have? In the next few posts I'll propose a number of approaches, some old, some perhaps new, to accomplish this end.

*Full disclosure: Professor Feldman's book, as I've noted in a review on Amazon, isn't really very good, at least for anyone who is not a law professor. But she does seem to know the legal side of the system quite well, so I am accepting her view on the issue of claims interpretation.

I first saw this story when it appeared on Matt Yglesias Moneybox blog on May 22. It has since been taken down, but you can Google the subject ("Oklahoma State University tries to patent a steak") and see that similar stories have been picked up by a lot of echoes.

Originally Matt Yglesias was joining the rest of us who cite ridiculous examples of patents and copyrights. In this one, he found that Oklahoma State University had applied for a patent on a cut of steak, or more exactly, how it is butchered.

It is not clear whether the patent will be denied, but one can no longer be sure. As Matt asks, how would this not be like other business or software patents? Such stretches have not proved beyond the capacity of the Patent and Trademark office to overcome its renowned reluctance to seek fees and constituent support.

But the thought also occurred to me that the University is enjoying so much publicity that it should continue its application or appeal any adverse finding just for the public attention.

The ideas are those of patent lawyer Andrew Schulman, but the story is full of insight on a patent lawyer's thinking and offers real clues into why the patent system is such a mess--complexity compounded, full of precedents that ordinary humans will find puzzling at best.

Alex Tabarrok who blogs at Marginal Revolution has suddenly turned his attention to patents and their pernicious extension (or perhaps I have only just become aware of his interest) link here. He has written an e-book and cites a number of favorable reviews. He argues that patents have not only failed to encourage innovation but have instead slowed it down based on data over a period of years and citing the legal costs of patent suits decreasing the returns from innovation.

He returns to patents in a later blog where he comes down hard on one example: the extension of protection for the development of a new medical procedure link here. His example of choice has been much in the IP news recently as the Supreme Court heard oral arguments on the granting of a patent on a method of determining how much of a medicine long since out of the reach of its original patent should be adjusted, depending on the patient's tests. He then does a riff on the general expansion of patent protection to such new fields as software.

Google has by now put 8 million US patents and 3 million patent applications on line link here. In addition to describing what it is doing, it sets out its objective in doing so thusly:

"As part of Google's mission to organize the world's information and make it universally accessible and useful, we're constantly working to expand the diversity of content we make available to our users. With Google Patents, you can now search the full text of the U.S. patent corpus and find patents that interest you."

Google has had its own issues with patents. Like much of the rest of the software industry, it avoided filing for them for some years, but competitive patenting has taken over the industry in the drive to gain a monopolistic advantage or prevent others from doing so by establishing a patent pool to force cross licensing. By making it easier to challenge applications and even granted patents, putting them on line should make bad patents rarer. The problem of identifying and proving prior art remains.

This week The Economist has three stories and an editorial on intellectual-property link here here, here and here . The editorial is unusual in the strength of its critique and its suggestions for remedies.

"First, patents in fields where innovation moves fast and is relatively cheap like computing should have shorter terms than those in areas where it is slower and more expensive like pharmaceuticals. The divergent interests of patent-holders in different industries have held up reform, but there is no reason why they should not be treated differently: such distinctions are made in other areas of intellectual-property law. Second, the bar for obtaining a patent, particularly for software or business methods, should be much higher (as it is in other countries), and the process of re-evaluating bad patents should be more open and efficient. Finally, there should be greater disclosure requirements of the ownership of patent portfolios, and patent cases should be heard by specialised courts (as happens in other areas of law), rather than non-expert juries in advantageous jurisdictions in Texas. That would make life harder for trolls. These fixes would help America's patent system encourage innovation rather than litigation."

He begins strongly with this: "... out in Silicon Valley, patents have become the competitive weapon of choice, used by high-tech giants to bludgeon rivals and crush upstarts."

He then says that "The best reporting I have found on the subject was by National Public Radio" link here which focused among other places, on an old adversary to readers of this blog, Intellectual Ventures and the whole business of patent trolls, suing about patent violations in East Texas.

He observes "What may have started out as a clever way to "turbocharge technological progress," seems to have morphed into something closer to a Jersey City protection racket. When Intellectual Ventures came knocking on the door of tech companies offering to license its patents, companies began to get the sense that it was an offer they couldn't refuse.

Pearlstein then turns to the proposed legislation now in Congress and commends it for making it easier to challenge a patent before issuance while adding "missing from the bill... is any attempt to narrow the range of what can be patented in the areas of software and business methods".

He closes by suggesting that big companies with lots of patents aren't interested in fixing that, so nothing will come from Congress or from the Supreme Court which "has done so much to slam the courtroom door on consumers and workers [and] left it wide open for corporate interests running a legal protection racket. If there ever was an abuse of the judicial process, this is surely it."

Pearlstein's voice on these issues is a welcome addition to the growing coverage and number of articulate critics of patents.

The New York Times has been doing better on patents and copyrights recently, exemplified today with a story entitled A Bull Market in Tech Patents link here .

The article includes this drawing of a smart phone and the number of patents - 250,000 according to Google--that affect each of the subsystems:

That is quite an invitation to lawsuits and lawyers looking for fat fees.

But the Gee-Whiz aspect of these numbers is overshadowed by the costs in innovation in an industry hypnotized by who has the latest gizmo. As the article goes on to note, "This patent gold rush has a darker side. It is diverting money for innovation from industries crucial to the economic future of the United States, analysts say. Patents were created as an incentive for innovation, giving inventors a temporary right to commercialize their ideas, without others copying them. While the recent blockbuster patent deals may make sense for the companies, analysts say, they are fed largely by legal considerations asserting patent claims or defending against claims rather than economic ones."

That leaves us with an industry dominated a handful of giants and a mob of minnows on which the giants feed. The consumer pays for all this in high prices and a lack of real competition or innovation.